Deutschle, Gregor et al.

Patent Trials and Appeals Board

Sep 4, 2019

14696078 - (D) (P.T.A.B. Sep. 4, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/696,078 04/24/2015 Gregor Deutschle 2133.274USU 5897
27623 7590 09/04/2019
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
EXAMINER
KIPOUROS, HOLLY MICHAELA
ART UNIT PAPER NUMBER
1799
MAIL DATE DELIVERY MODE
09/04/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGOR DEUTSCHLE, EDGAR PAWLOWSKI,
JOERN WASSENBERG, ISABELL DUBRAU, and JUDITH AUERBACH
____________

Appeal 2019-000898
Application 14/696,078
Technology Center 1700
____________

Before JEFFREY B. ROBERTSON, MICHAEL G. McMANUS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL1

STATEMENT OF THE CASE

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–4, 6–13, and 21–28. (Appeal Br. 2.) We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 This Decision includes citations to the following documents:
Specification filed April 24, 2015 (“Spec.”); Final Office Action mailed
November 22, 2017 (“Final Act.”); Appeal Brief filed June 11, 2018
(“Appeal Br.”); Examiner’s Answer mailed September 18, 2018 (“Ans.”);
and Reply Brief November 15, 2018 (“Reply Br.”).
2 Appellant/Applicant is Schott AG, which is also identified in the Appeal
Brief as the real party in interest. (Appeal Br. 1.)
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THE INVENTION
Appellant states the invention relates to a packaging unit for a
pharmaceutical, medical, or cosmetic item, and use of the packaging unit for
sterilizing and sterile transport of such items. (Spec. ¶ 2.)
Claim 1 is representative and reproduced below from the Claims
Appendix to the Appeal Brief:
1. A packaging unit for at least one pharmaceutical, medical, or
cosmetic item, comprising:
a sterilizing chamber for accommodating the item; and
a prechamber that has a first gas-tight closure and a second gas-
tight closure, the first gastight closure sealing, after receipt of the item
in the sterilizing chamber through the prechamber, the prechamber
from an exterior of the packaging unit, the second gas-tight closure
sealing the prechamber from the sterilizing chamber by a gas-tight
resealable closure,
wherein the prechamber has a wall that has a portion
comprising a wall material exhibiting selective permeability for
sterilizing agents, the portion being between the first and second gas-
tight closures to sterilize of an interior of the sterilizing chamber
through the portion when the second gas-tight closure between the
sterilizing chamber and the prechamber is unsealed and the first
gastight closure between the prechamber and the exterior is sealed.
(Appeal Br. (Claims Appendix) 9.)
Claims 24 and 27 are also independent and recite similar packaging
units with first and second gas-closures, and a gas permeable portion. (Id. at
11–12.)

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REJECTIONS
1. The Examiner rejected claims 1–4, 6–11, and 22–28 under 35 U.S.C.
§ 103 as obvious over Riese (US 4,637,061; issued January 13, 1987)
and Yan (US 2005/0268573 A1, published December 8, 2005).
2. The Examiner rejected claims 12 and 13 under 35 U.S.C. § 103 as
obvious over Riese, Yan, and Ludvig (US 2012/0205269 A1,
published August 16, 2012)
3. The Examiner rejected claim 21 under 35 U.S.C. § 103 as obvious
over Riese, Yan, and Haskin (US 6,649,236 B2; issued November 18,
2003).
(Final Act. 4–15.)
We select independent claims 1 and 27 for disposition of this appeal,
which are representative of the subject matter claimed, and decide the appeal
as to all grounds of rejection on the basis of the arguments presented for
these claims (see Appeal Br. 4–8). 37 C.F.R. § 41.37(c)(1)(iv).

Rejection 1
ISSUE
The Examiner found, inter alia, Riese discloses a packaging unit
having a lower chamber (sterilization chamber), an upper chamber
(prechamber), first and second fasteners (closures), where Riese discloses a
wall in the upper/prechamber of impermeable film. (Final Act. 4–5.) The
Examiner found Riese discloses sterilizing the packaging unit. (Id. at 5.)
The Examiner found Riese is silent as to the wall having a portion that
exhibits selective permeability for sterilizing agents between first and second
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gas tight closures as recited in claim 1. (Id.) The Examiner found that Yan
discloses a packaging unit for housing a medical item formed of a gas
impermeable film, where a gas impermeable wall has a portion including a
wall material exhibiting selective permeability to a gas sterilant such as
ethylene oxide. (Id.at 5–6.) The Examiner found Yan discloses after
sterilization of an item, an impermeable sealing patch is placed over the gas
permeable portion to seal the packaging unit against subsequent gas
permeation. (Id.) The Examiner determined it would have been obvious to
modify Riese’s device to include a portion comprising a wall material
exhibiting selective permeability as disclosed in Yan “to afford a user
greater flexibility to sterilize the contents of the package after sealing of the
package, while maintaining the package’s utility as an air-tight package by
providing a sealing patch for sealing the permeable portion of the wall
following sterilization.” (Id. at 6.) In addition, the Examiner determined it
would have been obvious to have placed the permeable portion between the
first and second gas-tight closures “as the skilled artisan would have
recognized that such a placement would advantageously allow a user to
sterilize an item located in the upper chamber of the packaging unit with
sterilizing gas.” (Id.)
Appellant makes the following arguments: (1) there is insufficient
reasoning based on the evidence of record and absent hindsight to establish
why one of ordinary skill in the art would have modified Riese to include
Yan’s permeable portion between the first and second closures disclosed in
Riese; (2) the modification of Riese proposed by the Examiner would render
Riese unsuitable for its intended purpose of providing a leak and odor proof
container for transport and storage; (3) the modification of Riese to include
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permeable portion and patch in Yan would lack the claimed permeability;
and (4) Riese discloses a structure for protecting and preserving specimens,
which teaches away from the proposed modification. (Appeal Br. 4–7.)
Accordingly, the dispositive issue with respect to this rejection is:
Has Appellant identified a reversible error in the Examiner’s
determination that it would have been obvious to have incorporated the
permeable wall portion disclosed in Yan into between the first and second
closures in Riese’s device?

DISCUSSION
We are not persuaded by Appellant’s argument that the Examiner’s
rationale is based on impermissible hindsight. Rather, we are of the view
that the Examiner’s position is based sufficiently on the prior art as
understood by one having ordinary skill. In this regard, the Examiner stated
that the skilled artisan would have recognized that placing a permeable
portion between the first and second fasteners (closures) of Riese’s pre-
chamber (upper chamber) would allow a user to sterilize an item located in
an upper chamber with sterilizing gas and would provide greater flexibility
to a user by enhancing the utility of Riese’s device. (Ans. 5–6; see Riese
Fig. 8, fasteners 23, 33; col. 3, ll. 20–46, col. 5, ll. 49–53.)
Indeed, the broad disclosures in both Riese and Yan support the
Examiner’s view that such flexibility would have been desired. Riese
discloses that the container is sterilized before use with ethylene oxide gas,
and Riese discloses further that the invention may be used “in connection
with foods, microbiology, and other industrial applications.” (Riese, col. 5,
ll. 19–30, col. 6, ll. 3–6.) Yan discloses a gas permeable layer or wall for
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sterilizing and packaging, which is “suitable for sterilization and packaging
of other articles, including foods, pharmaceuticals, diagnostic and assay
systems, sensitive electrical components, chemical system components, and
the like, where the ability to sterilize articles after initial packaging has been
completed is desirable.” (Yan, ¶¶32, 54.) As a result, we agree with the
Examiner that one of ordinary skill in the art would have had reasons to have
employed the gas permeable wall of Yan between the first and second
fasteners in Riese to provide increased flexibility for sterilization of an item
in the packaging unit of Riese. (Ans. 4–7.) See KSR Int’l. Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007) (“[w]hen a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.”); see
also Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009) (“hold[ing] that while an analysis of obviousness always
depends on evidence that supports the required Graham factual findings, it
also may include recourse to logic, judgment, and common sense available
to the person of ordinary skill that do not necessarily require explication in
any reference or expert opinion.”) Thus, the Examiner’s rationale is
supported sufficiently by the references of record as understood by the
ordinary skilled artisan.
Accordingly, we are not persuaded by Appellant’s argument that there
is insufficient rationale absent hindsight to support the Examiner’s
combination.
We are not persuaded by Appellant’s argument that there would have
been no reason to place Yan’s permeable portion between Riese’s first and
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second closures (fasteners 23 and 33) because Riese discloses a leak and
odor proof container. As the Examiner points out, the proposed
modification of Riese in view of Yan’s disclosure incorporates a sealing
patch, which is capable of rendering the wall air-tight and leak proof. (Ans.
6.) In this regard, we agree with the Examiner that the Appellant’s argument
that addition of the sealing patch would destroy the permeability recited in
the claims is not commensurate in scope with the claims. (Ans. 6.) That is,
the claims on appeal do not exclude a further treatment to cover the
permeable wall portion. Indeed, claim 24 recites expressly the presence of a
“sealing label” that “seals the wall material exhibiting selective permeability
after the sterilizing agents sterilize of [sic] the interior of the sterilizing
chamber.” Thus, Appellant’s argument is unpersuasive in view of the
express language of the claims.
We are not persuaded by Appellant’s argument that, because Riese
discloses protecting specimens that are preserved in solution, Riese teaches
away from the proposed modification “where sterilization is the opposite of
protecting and preserving the specimen.” (Appeal Br. 6.) We agree with the
Examiner that Appellant has not provided a sufficient explanation to
conclude that the purposes of Riese and Yan are mutually exclusive. (Ans.
6–7.) As acknowledged by Appellant, sterilization of a specimen is not
harmful. (Appeal Br. 6.) In addition, as the Examiner explains, Yan
discloses that the packaging unit used for sterilization may serve as a sealed
structure for protecting the item subsequent to sterilization. (Ans. 7, citing
Yan ¶ 32.) The Examiner explains additionally that Riese discloses the item
placed in the packaging unit is stored for future use, such that the advantage
of sterilizing the item to make it more suitable for future use would be
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readily apparent to one of ordinary skill in the art. (Id. citing Riese, col. 1,
ll. 12–18, col. 6, ll. 3–6.) Accordingly, Appellant’s arguments are not
persuasive.
Regarding claim 27, Appellant argues that the structure recited in the
claim provides a simple structure that allows for insertion and sterilization of
an item in a manner that cannot be predicted by those skilled in the art from
Riese and Yan absent impermissible hindsight. (Appeal Br. 7–8.) We are
not persuaded by this argument for essentially the same reasons discussed
above with respect to claim 1.
Accordingly, we sustain the Examiner’s rejection of claims 1–4, 6–11,
and 22–28.

Rejections 2 and 3
Appellant does not provide separate arguments with respect to
dependent claims 12 and 13, the subject of Rejection 2, or dependent claim
21, the subject of Rejection 3. (See Appeal Br. 4.) Accordingly, we affirm
Rejections 2 and 3 for similar reasons as discussed for Rejection 1.

DECISION
We affirm the Examiner’s decision rejecting claims 1–4, 6–13, and
21–28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED